Complainant is Implant Direct Europe AG, a company established under the laws of Switzerland, with its registered office in Zug, Switzerland, represented internally.
Respondent is Supracom B.V., a limited liability company under the laws of the Netherlands, with its registered office in Garderen, the Netherlands, represented by Visser & Van Solkema Advocaten, the Netherlands.
The disputed domain name <implantdirect.nl> (hereinafter referred to as the “Domain Name”) is registered with SIDN through 12Register.com.
The original Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2008.
On September 18, 2008, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 19, 2008, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On September 24, 2008, the Center notified the Parties that in principle, the language of the proceedings is Dutch and therefore requesting Complainant to provide at least one of the following:
1. satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; or
2. the Complaint translated in Dutch; or
3. a request for English to be the language of the administrative proceedings, including arguments and supporting material as to why the proceedings should be conducted in English.
Complainant responded on September 26, 2008, that the proceedings should be in English since all correspondence with Respondent had been in English and Complainant is located in Switzerland. Respondent, although given the opportunity to do so by October 1, 2008, did not comment on this notification.
In response to a notification by the Center that the Complaint was administratively deficient because it lacked a statement of relevant legal grounds, Complainant filed an Amended Complaint on October 8, 2008. The Center verified that the Complaint together with the Amended Complaint now satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 15.5, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 10, 2008. In accordance with the Regulations, article 7.1, the due date for Response was October 30, 2008. A first Response from Respondent was filed with the Center on October 31, 2008. Complainant submitted a supplemental document on October 31, 2008; Respondent submitted an Amended Response on November 5, 2008.
The Center appointed Mr. Harmeling as the Panelist in this matter on November 11, 2008. The Panelist finds that he was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 8.2.
Complainant produces dental implants. No further information has been provided.
Respondent handles the ICT-related affairs of its sister company Implacom B.V., a Dutch limited liability company, which has imported and distributed dental products, including dental implants, for twenty years.
Respondent is holder of the Domain Name. The Domain Name was first registered on January 22, 2007. Respondent obtained ownership of the Domain Name registration on February 18, 2008.
On May 16, 2008, Complainant filed an application for registration of the trademark IMPLANT DIRECT TM SIMPLY SMARTER with the German Patent and Trademark Office, which sent a confirmation of receipt on June 23, 2008.
On October 7, 2008, Complainant filed an application for registration of a Community trademark for IMPLANT DIRECT for goods and services in classes 3 (toothpaste), 10 (including dental implants) and 44 (including medical and health services). No trademark registration has been submitted to the Panelist.
Complainant contends that it holds IMPLANT DIRECT trademarks. This trademark has allegedly been registered with the German Patent and Trademark Office and the European Office for Harmonization in the Internal Market. Complainant has made repeated requests to Respondent to transfer the Domain Name. Respondent uses the Domain Name to redirect internet traffic to its own homepage on which it sells dental implant products. Respondent would be concerned about losing business by Complainant's market entrance in the Netherlands. Respondent registered the Domain Name after Complainant had initiated contact with them. Respondent was aware of Complainant's existence. Complainant requests transfer of the Domain Name.
Respondent acknowledges that Complainant has registered a trademark, but contends that such registration occurred only very recently. The Domain Name was registered on January 22, 2007 by a business relation of Respondent and was transferred to Respondent in the beginning of 2008. Respondent's sister company Implacom B.V. is involved in the distribution and importation of dental products, including dental implants. A trademark search was conducted at the time and no infringements were found. Respondent entered into negotiations with the original registrant about the transfer of the Domain Name to Respondent before Complainant started its business activities in Europe or the Netherlands. Implacom's internet related business has grown over the last few years. The Domain Name was not registered and is not being used in bad faith.
Article 16 of the Regulations provides that in principle, the language of the proceedings shall be Dutch. The panelist may decide that the proceedings shall be in English if one of the parties has no knowledge of the Dutch language.
Complainant appears to lack knowledge of the Dutch language and Parties have used the English language in their mutual correspondence and in their submissions. Respondent has not objected to the use of the English language in these proceedings and Respondent appears to understand English. Respondent's right of defense is therefore not prejudiced if the language of the proceedings is English. Therefore, the Panelist decides that the language of the proceedings shall be English (see also AB Electrolux v. Marcel Vlaar, WIPO Case No. DNL2008-0005; Metinvest Holdings NV v. O. Bogatov, WIPO Case No. DNL2008-0025; and Verizon Trademark Services LLC v. Van Groenendael Adviesgroep, WIPO Case No. DNL2008-0029).
Both Complainant and Respondent have made further submissions in the sense of article 10.2 of the Regulations. Complainant submitted a supplemental document after submission of its original Complaint on September 17, 2008 as well as its Amended Complaint on October 8, 2008. Respondent first submitted its Response on October 31, 2008, (i.e. after the deadline of October 30, 2008) and an Amended Response on November 5, 2008.
According to article 10.2 of the Regulations, the Panelist must determine the admissibility of such submissions.
The Regulations provide for a simple procedure during which parties have one opportunity to submit their arguments within strict deadlines. Although the Panelist is allowed to admit further submissions under certain circumstances, the parties will need to explain why this should be the case (see also E-Plus Mobilfunk GmbH & Co. KG v. W. Parami, WIPO Case No. DNL2008-0022).
Considering the fact that Respondent's first Response was sent on October 30, 2008 and would have been submitted within the deadline if not for its use of a wrong e-mail address, the Panelist admits Respondent's first Response.
However, Respondent has not provided any arguments why the Panelist should deviate from the deadline of 20 days as provided for in article 7.1 of the Regulations and admit the Amended Response. Similarly, Complainant has not made clear why the Panelist should consider its further submission of October 31, 2008.
Therefore, and in accordance with article 10.2, the Panelist will not admit the further submission from Complainant nor Respondent's Amended Response of November 5, 2008.
According to article 2.1 of the Regulations, the requested remedy shall be granted if Complainant asserts and establishes each of the following:
“a. [the] domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the complainant has rights;
II. a personal name registered in a Dutch municipal register of persons (‘gemeentelijke basisadministratie'), or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which complainant undertakes public activities on a permanent basis; and
b. the domain name holder has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.”
Complainant bases its claim on its alleged registration of trademarks for IMPLANT DIRECT with the German Patent and Trademark Office as well as with the Office for Harmonization in the Internal Market.
Respondent asserts that these trademarks were registered only recently. The Panelist understands Respondent's assertion as referring to the actual filing of Complainant's application for registration of the trademarks rather than the registration itself.
With respect to Complainant's contention that it holds trademark rights, the Panelist finds as follows.
First, a trademark registered with the German Patent and Trademark Office does not provide an exclusive trademark right in relation to the Netherlands and can therefore not constitute a basis for the Complaint in accordance with article 2.1 sub a (I) of the Regulations. This was also implicit in the Center's Complaint Deficiency Notification of October 3, 2008. According to the Center, the original Complaint lacked the required argumentation on whether the Domain Name was identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights.
Second, Complainant appears to rely on an application for a Community trademark, i.e. not a registration of a Community trademark. According to article 6 of the Community Trademark Regulation,i which is directly applicable in the Netherlands, a Community trademark will only be obtained by means of registration. Annex 1 of Complainant's Amended Complaint establishes that Complainant applied for a device mark on October 7, 2008. Consequently, this date marks the start of a registration procedure and does not prove registration as such. Up till today, it appears that the registration process has not been completed as follows from the database of the Office for Harmonization in the Internal Market (“http://oami.europa.eu/”). Therefore, Complainant has not established that it holds a Community Trademark in IMPLANT DIRECT that is protected under Dutch law. Reference is further made to Intershare, S.L. v. Mr. D. Marecaux, WIPO Case No. DNL2008-0036.
Complainant has not invoked any other legal basis under article 2.1 sub a of the Regulations for the requested remedies, such as a trade name protected under Dutch law, or an appropriately registered personal name.
The Complaint cannot be successful unless it meets all three cumulative requirements under article 2.1 of the Regulations. Because the first requirement has not been met, the Panelist finds that the remaining two requirements – the possible rights or legitimate interests of Respondent in the Domain Name (article 2.1 sub b) and the question whether Respondent has registered or used the Domain Name in bad faith (article 2.1 sub c) – do not require further discussion.
In view of the above, the Panelist finds that the Complaint does not meet the requirements of article 2.1 of the Regulations so that the Complaint must be denied.
For all the foregoing reasons, the Complaint is denied.
Hub. J. Harmeling
Dated: December 9, 2008
i Council Regulation (EC), No. 40/94 of 20 December 1993 on the Community trade mark.